Appeal No. 1998-0784 Page 5
Application No. 07/949,567
Recycling Article describes longitudinal rails. There simply is no evidence that one of ordinary
skill in the art would have found it obvious to incorporate reinforcing rails on the longitudinal
edges of the planar support body.
Even if it would have been obvious to incorporate longitudinal rails in general, we agree
with Appellant that there is no evidence that one of ordinary skill in the art would have found it
obvious to incorporate such rails having a height smaller than the height of the planar support
body (Brief, pages 4-5). The Examiner cites no basis in the prior art for the use of rails of such
height. In the Response to Argument section of the Answer, the Examiner seems to imply that
Appellant must establish that the height of the rails is critical in view of the fact that the
specification, on page 3, states that “[t]he height of the reinforcing rails may be equal to or
smaller than the height of the base plate.” The Examiner seems to think that since Appellant
discloses that either height can be used, the height is an art recognized variable. But Appellant
did not disclose that use of either height was prior art to him. There is a basic difference between
(a) a showing by an applicant of what was known in the art to be equivalents and (b), a showing
that the applicant has found, as a part of his or her discovery or inventive process, that certain
things may be used to achieve the same result. Equivalence taught by an applicant but not known
to those of ordinary skill in the art at the time cannot be said to be recognized in the prior art.
In re Ruff, 256 F.2d 590, 596-597, 118 USPQ 340, 346 (CCPA 1958). A determination of
obviousness cannot be based on Appellant’s own invention. There must be some basis in the
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